Law of Turkmenistan about inventions and industrial designs

To number of the basic innovations in this Law it is possible to indicate an introduction besides a formal examination and examination in essence, the so-called limited examination, with conducting of search only with use of local information's sources and granting on its basis of the limited patents with validity of 10 years.  For comparison we shall notice, that in the former Patent law from 1993 there was an opportunity of granting of the provisional patent on the basis of formal examination with validity of 5 years or the patent with validity of 20 years on the basis of examination on absolute novelty, inventive step and industrial applicability. The provisional patent with five years' validity as practice has shown was mostly the patent of prestige, instead of the commercial patent. It is well known that development of any innovation and its consummation up to a level of market requires creating of manufacture, and corresponding materials, the equipment, the industrial premises, the appropriate staff etc. The enforcement of these conditions within five years' the majority owners of the provisional patents could not and in result they had not opportunities to receive appreciable commercial benefit from use of the patent. After five years the invention or an industrial designs created by them was public ownership. The new law providing receiving of limited patents with validity of 10 years corrects such situation. Now owners of the limited patents can have additional 5 years for exclusive use of the created innovation and reception from it of commercial benefit. In result is created the additional opportunity for the accelerated involving in industrial production of the newest domestic and foreign technical achievements in various areas of a science and technics and their wide use by the industry and the population of our country.

In case of receiving of good commercial success from use of the limited patent the new Law provides an opportunity of its further exclusive use by way of transformation to the patent with term of 20 years for inventions and 15 years for industrial designs. The patent with such validity will be granted in case of filing by its owner of the corresponding petition and positive result of examination concerning absolute novelty and inventive step. Moreover, according to the new Law, owners of the limited patents and patents for drugs, agrochemicals and pesticides can at desire prolong terms of their action for additional five years. Such innovation explains that use of a new chemical substances in sphere of public use is possible after long tests (sometimes till five years and more) concerning toxicity for the person and animals and definition of allowable norms of their use. In this connection such substances can receive a start in life only after all-round studying by medical, epidemiological and veterinary organizations of their toxic, pharmacological and physiological properties. Thus, the new law provides indemnification to owners of chemical patents of losses of time for their research concerning safety for the person and an environment.

It is necessary to note that the law allows receiving the patent for a technical innovation without of stages of receiving of the limited patent under condition of positive result of the limited examination and filing of the petition about executing of patent examination in essence. It can be made within five years from the filing date of application for patenting of a technical innovation. For acceleration of granting to the applicant of the patent he can to attach to mentioned petition at any stage of patent examination a copy of the opinion of the International preliminary examination or other proofs of patentability of an innovation, for example, the report on international search, a copy of the patent or the decision about its grant under the parallel application by one of Competent bodies of examination.

The important feature of the new law it is entitlement of owners of provisional patents on their transformation into limited patents with validity of 10 years within three years from the date of expiry of their action and further into patents with validity of 20 years. Such canon of law will allow creating equal conditions for owners of provisional patents with those applicants whom will file applications for receiving the limited patents according to new Law. It in turn will be additional stimulus to increase of interest of owners of such patents to prolongation of active life of the inventions and industrial designs and receiving of the further commercial benefit from their use.

Other innovation according to new law it is the opportunity of restoration of action of patents within three years from the date of the termination of payment of the annual fee for their maintenance in force. Earlier this term was 6 months. The increase of term for restoration of action of the patent has been dictated by reasons of creation of side benefits for owners of patents that completely coincides with recommendations WIPO. The tendency to satisfy wishes of patents owners and maximally to take into account their interests is observed all over the world and dictated by desire to speed up technological advance in all areas of our life.

One more essential innovation in the new Law is introduction of a temporary legal protection for inventions / industrial designs from the date of the publication of data about patent applications till date of their registration in the state register. The given measure allows confirming in a legislative order a rights of the applicant concerning this filed technical decision. It, in turn, gives the applicant the right to warn any third party using the given technical decision without the consent of the applicant about possible for him  of material consequences, in case of a recognition of this decision by patentable. The problem of the maximal protection of inventors and owners of patents from non-authorized use by the third parties of another's technical achievements thus is solved.

It is necessary to note also occurrence in the new Law of article under the name «the Customs control which was not in the former law from 1993. This article accents attention of patent owners that protection of their rights is conducted also according to Customs code. The mention in the Law of the customs control is connected by that effective protection of the rights of owners of inventions and industrial designs which possible only under condition of the strict control of all stages of movement of the goods - from crossing of frontier (the customs control) up to the control of their quality (standardization, certification), under an obligatory condition of acceptance of appropriate sanctions to infringers. It very much an important point to which it is necessary to pay the closest attention. The matter is that if without the permission of the owner of the patent another's inventions will be used then the legal owner will not be interested in patenting of inventions and granted to him patents  will be perceived by him as the empty paper not protected by the state.
In distinction from laws of some other countries the new Law of Turkmenistan does not contain such object of a legal protection as "utility model". It, however, does not mean that to useful models will be refused in protection in Turkmenistan. Applications about patenting of such innovations will be accepted to consideration at a level of requirements to the limited patents for the inventions. However, if in the course of examination will be established that this innovation commensurate not only to criteria of novelty and industrial applicability, but also criterion of inventive step then for such innovations maybe to obtain a patents with validity 20 years.
It puts forward necessity of harmonization of all legislative acts to some extent contiguous with the new law of Turkmenistan about inventions and industrial designs by addition by their corresponding rules of law for excluding an opportunity of abusing in this sphere. Work in this direction is started, and there is a confidence, that Turkmenistan in the near future will enter number of the states with the good legislative base covering all aspects of protection of the rights of owners of the intellectual property.
Other rules of law of the new Law (volume of a legal protection; conditions of patentability; authorship and the right of author on award; the right on the patent; rights of patent owner; the actions which are recognized and not recognized as infringement of the exclusive right of patent owner; the right of prior use and after use; use of the patented innovation; assignment of the rights to the patent, the termination and restoration of patent action, etc.) are basically identical or similar to corresponding norms of the Russian patent legislation.

Law of Turkmenistan about trademarks, service marks and names of origin places of goods  

In comparison with the former Patent law from 1993 the new Law comprises such new object of protection as the names of origin places of goods under which understand a designation representing either containing the modern or historical name of the country, settlement, district or other geographical object, or derivative from such name, becoming known as a result of its use concerning the goods with a special properties which is exclusively or are mainly connected with  a characteristic environment for the given geographical object and-or human factors. Good illustration of this concept are such designations as painting of Khohloma, Turcoman  carpets, Turkmenian alabay, the Dutch tulips, the downy scarf of Orenburg , the Vologda laces etc.

The order of registration of new object in the state register and granting of the right on its use basically is similar to norms of the Russian legislation. The structure of documentation for the state registration and granting of the right of use the name of origin place of goods includes practically the same documents which are stipulated by norms of the Russian legislation. The same is to procedure of examination of the application, to opposition against of the examination decision or registration of the name of origin place of goods.

Registration of the name of origin place of goods and grant of the certificate about it is not an obstacle for filing new application and receiving the certificate about the right of use of the same name by any other person if he makes the similar goods in the same geographical area. Thus, names of origin places of goods are not objects of the exclusive right. In this connection the persons who have received the right of use of the name origin goods, have right concerning  its use , but have no right to assign its to other persons, or to forbid use of the same name to persons to whom such right is given on the basis of Turkmenpatent decision. The right of use of the names of origin places of goods includes its use for the goods or on packing, in advertising, prospectuses, forms, accounts, and also for the precautionary marking indicating that this designation is registered in Turkmenistan.

Registration of the names of origin places of goods have term less action, however validity of the certificate about the right of use of this name is constitutes 10 years from a filing date of the appropriate application in Turkmenpatent with an opportunity of its periodic renewal on the next decennial term.

The certain innovations in the new Law have also concerning requirements to trade marks and service marks (hereafter "trade marks") to their use. In particular, in the former Patent law of 1993 did not contain requirements about obligatory use of a trade mark. Now this demand has in the law. According to this demand the owner of the registered mark is obliged to use the trademark in the economic activities. Exception from this demand can be only objective circumstances which not allow using a mark, for example importing restrictions, failure of raw material supply, unacceptable change of conditions of realization of goods/services etc. Otherwise according to petition of the interested persons an action of the state registration of a mark can be stopped ahead of time concerning all or a part of the registered goods in connection with non-use of a mark continuously within any three years after its registration. Thus, competence to use a trade mark it is not only the right, but also a duty of its owner. Such canon of law is dictated by reasons of activization of economic activities of the owner of a mark and desire to prevent a clogging up of the state register by not working trade marks.

One more innovation is introduction in the new Law of articles on well-known trade marks and on their status. Introduction in the law of the given norm is caused by necessity of the further harmonization of the national Patent legislation with the international agreements signed by Turkmenistan, in particular with an item 6bis of the Parisian convention.  To well-known trade marks generally belong such marks which as a result of long and an intensive use, of the big expenses on the advertisement, wide geographical incidence, of great volumes of sales etc. got wide popularity and recognition among the various or certain groups of the population. In this connection, such marks can be protected by the state as on the basis of their state registration but also without registration. The trade marks which recognized orderly by well-known are subject to term less protection and entering into the list of well-known trade marks of Turkmenistan.  Rights on such marks are secured by the certificate and the publication in bulletin of Turkmenpatent. It is important to emphasize, that the legal protection of such marks can extend not only to those goods concerning which mark is registered, but also on other goods which belongs to other IC classes.  It is connected to an opportunity of introduction of consumers in a mistake concerning the manufacturer of such goods which will associate with the owner of a well-known mark that not only will restrict his legitimate interests, but also will harm mark reputation. Requirements to well-known marks and procedure of their recognition by well-known will be established by subordinate legislation of Turkmenpatent.  

Other innovation it is introduction in the new law of articles about the order of registration and the status of collective trade marks. In the former Patent law from 1993 about such marks it was spoken only tangentially. The new law corrects this lack. Now in new law in detail indicate the essence of collective marks, the right on such marks, the order of their registration and practical use. In particular, as against a usual trade mark, the collective mark should have the charter with data on the persons having the right on the given mark, list of goods having uniform qualitative or general characteristics concerning which the collective mark is registered, conditions and the order of the control over its use etc. By the new law as against a usual trade mark, the collective mark and the right on its use cannot to transfer to other persons. Besides this a new law gives an opportunity of transformation of the collective mark and the application concerning its registration in a usual trade mark and otherwise.

Other difference of the new law compared to former Patent law of 1993 is change of date of readout of action of a trade mark. In particular, according to the new law a decennial term validity of a trade mark originates not from the date of its registration in the state register as was formerly the case but from the date of filing trademark application. The given rule allows to receive to applicants a temporary legal protection on a trade mark that expands opportunities of applicants concerning of infringements prevention of their economic interests connected to use of the given trade mark by the third parties

At the same time it is necessary to have in view of, that according to the new law the temporary legal protection on the trade mark arises not from the date of trademark application but from the date of receiving by applicants of Turkmenpatent notice about acceptance of the given application to consideration till date of registration of a trade mark in the state register. Thus, the mentioned notice represents itself as the document confirming the rights of the applicant on the given mark and can be used by him for the prevention of real and potential infringements of his rights from illegal actions. 

In conclusion it should also be stated that the new law contains also very important article about the customs control. Introduction of this article has long ago ripened and is connected by that if the customs house does not react in any way concerning of import to Turkmenistan the counterfeit goods on which the’s trade mark the owner of the rights to such a trade mark not will have interest to register trademark in the state register. The important role of customs in protection of interests of  trade marks owners explains is that to resist an infringements in this sphere by a soft option possibly only  by means of the customs control over moving of the goods on border but no after they will be dissolved in the markets inside the country. In this connection one of the important function of customs house is cooperation with business for identification of the infringements goods, a detention of the infringements goods for filing by the legal owner of the corresponding judicial claim, assistance in realization of lawful trade and use of effective measures concerning realization of protection of the rights of owners of trade marks proportionally to the sizes of infringements of their rights. Introduction in the new Law of separate clause{article} on the customs control is necessary for the catalysis of effective actions of customs bodies at a legislative level concerning protection of the rights of owners of the means of an individualization registered in Turkmenistan and other exclusive rights concerning  use of objects of the intellectual property.  

Here the most basic innovations are indicated in two new laws of Turkmenistan. We shall note, however, that both laws contain in comparison with the former Patent law from 1993 more detailed order of executing of various procedures, including registration of patents, certificates, assignments, license agreements in the state register, grant of protective documents, prolongation of terms of their action, entering of changes into applications and registrations etc. It undoubtedly will allow facilitating the further work above sub legislative documents and comments to discussed laws.
It is quite natural that process of perfection of the legislation of Turkmenistan in sphere of the industrial property cannot be counted completed with introduction in action of these two new laws. Promptly developing economy of Turkmenistan and the  connected with this a necessity more and more wide use of the new, technical decisions protected by patents and the registered means of an individualization of the goods and services will necessarily demand eventually the further perfection of the Patent legislation. Nevertheless there are bases to believe that in consequence of these two new laws in Turkmenistan are created good enough conditions for effective protection of registration and protection of the rights of owners of the industrial property